The Patents (Amendment) Rules, 2020 were notified by the Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry on October 19, 2020, effective immediately (‘Patents Rules, 2020’).
1. Reduced Disclosure Requirements
Previously, patent holders and their Indian licensees were required to provide an annual statement regarding the “working” of patented inventions on a commercial scale in India, which included disclosure of details of patent licensees and sub-licensees, as well as the quantity and value of the patented product (‘Form 27’). Further, a separate statement had to be filed for each patent.
The Patents Rules, 2020 simplify the format of Form 27, only requiring basic details and an approximation of the revenue accrued to the patent holder and the Indian licensee, in India from the manufacturing and/or importing of products incorporating the patented technology. There is no longer a requirement to disclose the details of the quantity of the patented product, or of licensees / sub-licensees of the patent holder.
Further, Form 27 may now be filed for multiple related patents held by the same patent holder, where the approximate revenue / value accrued to such holder from a patented invention cannot be separated from that accrued to the holder from other related patents.
2. Simplification of Filing Requirements
Under the Patents Rules, 2020, joint owners of a patent are permitted to file Form 27 jointly, as opposed to each patent holder being required to file the form individually. However, each licensee is still required to file the form separately.
Further, the period for which Form 27 is required to be filed has been changed from the “working” of patents in the previous calendar year to the previous financial year (i.e. 1st of April of a calendar year to the 31st of March of the next calendar year). The deadline for filing Form 27 has been extended from the 31st of March to the 30th of September of each calendar year.
3. Priority Document Requirements
In relation to international patent applications designating India, the Patents Rules, 2020 incorporate and give recognition to certain regulations under the Patent Cooperation Treaty of 1970, which exempt the physical submission of copies of priority documents and in turn permit the filing of such documents by utilizing the WIPO digital access system. The timelines for submission of priority documents, i.e. 31 months from the priority date or three months from the receipt of an invitation from the Indian Patent Office, remains unchanged.
The revised disclosure norms in relation to the commercial “working” of patents in India, under the Patents Rules, 2020 are business friendly. The Patents Rules, 2020 further eliminate various language ambiguities which existed in the earlier format. Therefore, these amendments are a welcome step forward.